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Draft Patent Rules released for public consultation: Overview of key changes

The Canadian Intellectual Property Office (CIPO) has released draft revisions to the Patent Rules for public consultation. The draft revisions propose to make extensive changes to the current Patent Rules. There are a number of substantial changes which will impact Canadian patent applicants, reflecting the intention to implement five intellectual property treaties. We anticipate that most if not all of these substantive changes will survive the period of consultation, and be implemented in 2018 or 2019. The following discussion provides an overview of some of the key changes in the proposed Patent Rules, which are predicated on the following policy objectives:

simplification and reduction of requirements for obtaining a filing date;

harmonization of requirements that can be requested by national offices, with respect to the form and content of an application;

amendments to the abandonment/reinstatement regime, including the introduction of notifications prior to abandonment;

possibility for patentees and applicants to perform certain administrative procedures without representation;

simplification of procedures for transfer of ownership; and

possibility of extension of the priority period under specific conditions.

One particularly notable change relates to the requirements to obtain a filing date. Whereas the current Patent Rules require documents to be filed in English or French, the draft Patent Rules would grant a filing date for a description “in any language” and, if filing documents are not in English or French, the Commissioner sets a non-extendible two-month deadline to file a translation. The new Patent Rules also provide that electronic documents are deemed to be received on the date of actual receipt according to the local time at CIPO, and do not explicitly require CIPO to be open on that day.

The new Patent Rules restrict opportunities for late national entry from a PCT application. Whereas the current rules permit national entry as of right up to 42 months from the priority date, with a late fee/reinstatement fee required for national entry between 30 and 42 months, under the proposed new Patent Rules this automatic 12 month “grace period” is removed. National entry after 30 months from the priority date is still possible, but only in limited circumstances at the discretion of the Commissioner. Late national entry would only be permitted if the applicant, no later than 12 months after the 30 month deadline, requests reinstatement along with a declaration that the failure to timely enter the national phase was unintentional and a statement of reasons for the failure, and the Commissioner would have to determine that the failure was unintentional to allow late entry.

Another important change is that the proposed new Patent Rules would allow an applicant to request restoration of priority within two months of filing the application. The new Patent Rules would also require that, for priority claims to non-Canadian applications, either a certified copy of the priority application must be filed or the priority document must be made available from a digital library recognized by CIPO. There is an exception from the certified copy requirement for national phase entries from a PCT application where a certified copy was already filed during the international stage.

The new Patent Rules would also allow an applicant to request that a Notice of Allowance be withdrawn and the application returned to examination.

A number of common deadlines would also change under the new Patent Rules. The deadline to request examination would be reduced from five years after filing to three years after filing (or the date of national entry in the case of a national entry made more than three years after the international filing date of a PCT application). The deadlines for responding to Examiner’s Requisitions, and for payment of the Final Fee, would be reduced from six months to four months, with extensions up to six months for responding to Examiner’s Requisitions. The proposed new Patent Rules would also make changes to the grace periods/reinstatement deadlines relating to maintenance fee payments.

The proposed new Patent Rules also set out a number of procedures and deadlines for making corrections to patents and patent applications; in many cases a fairly strict standard is imposed – the applicant or patentee must show that it would have been obvious that something else was intended than what appears in the specification or drawings and that nothing else could have been intended than the correction.

The above discussion highlights only some of the more noteworthy changes under the proposed Patent Rules, and the proposed Patent Rules may be modified during public consultation. Nonetheless, it appears that there will be significant changes to Canadian patent practice once the new Patent Rules come into force, sometime in 2018 or 2019. The public notice is available here.

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